Trademark

Chinese Trademark

Introduction to Hong Kong Trademark

The Hong Kong trademark registration system is territorial in nature though the Hong Kong sovereignty has returned back to China from United Kingdom in 1997, so the trademarks registered in mainland China or any other countries, including United Kingdom cannot be automatically extended to Hong Kong for legal protection. Separate filing in Hong Kong is a must if the applicant wants to get their trademarks protected in Hong Kong. Generally speaking, unlike the patent or design practice, the trademark registry of the Hong Kong Intellectual Property Department normally conducts substantive examination on the trademark before granting registration to examine whether the trademark lacks of any distinctive characteristics or is the same or similar as a prior applied or registered trademark. In spite of this substantive examination, compared with China, the whole process for trademark registration is much shorter. It only takes about six- eight months from filing application till receiving registration certificate and sometimes even shorter if it is straight-forwarding application.

A registered trademark is valid for a period of ten years from the date of application and is renewable for another ten years when its term expires. There is no limitation on the times of renewal. So a trademark can be for life after registration if the registrant has paid renewal fee each time when its term expires.

Thought the Hong Kong trademark registry also adopts the International Classification of Goods and Services formulated pursuant to the Nice Convention (“Nice Classification”), however, unlike China, if the specifications of the goods/services are not found in the Nice Classification, they might still be acceptable if they are classified into the correct Class. In addition, unlike China, there is not any additional fee when the designated goods or service exceeds basic ten. There is not any limitation on the amounts of goods/services and a broad description for the designated goods/services is also acceptable.

Multi-class trademark application is allowed in Hong Kong. Conventional priority can also be claimed within six months from the date of filing in a Paris Convention country or WTO member state. The certified priority document can be submitted within three months from the date of filing in Hong Kong, however, the information such as the application number, the application date and country must be provided when filing. Generally speaking, after filing the application, the trademark registration will undergo the following procedures:

Search and Examination – After receiving the application, the trademark registry will conduct a search with their records to check whether any same or similar trademarks have already been registered or applied for by another trader in respect of the same or similar Class of the goods and services.

Objections - If the requirements for registration are not met by the application, the trademark registry will preliminarily object to the mark. Then the applicant will have six months which is extendable upon request to meet the requirements.

Publication for Opposition - Once the filed trademark has been accepted for registration, the trademark will be published for opposition by any third parties. The statutory period for such opposition is three months.

Registration – If no opposition is raised or the opposition is rejected in the end, then the trademark registry will issue the certificate of registration.

Unlike mainland China, English is also the official language in Hong Kong, so the applicant can file trademark application either in English or in Chinese. If the application is filed in English, all the late proceedings for the registration and the trademark registration certificate will be issued in English. If the application is filed in Chinese, then the late procedures and the registration certificate will be issued in Chinese.

Unlike mainland China, to file trademark applications in Hong Kong, no Power of Attorney is required, while only the following documents/information are required:

Details of the trademark to be registered, such as the trademark specimen in JPG format and the list of the specific goods/services to be covered for protection of the mark, and the Class number in which the application is to filed for the mark; and

Details of the applicant, such as its name and address; and

Details of priority information, such as application date, number and country, when priority is claimed. The certified priority document can be submitted within three months after filing and a scanned photocopy of this priority document is acceptable.

Estimated Cost for Filing Hong Kong Trademark

Regarding the respective official fee and attorney fee for filing trademark applications in China, please kindly click here for our Schedule of Minimum Charges for Hong Kong Trademark for reference. The client is also encouraged to consult with us on the exact cost for the specific application by email: trademark@chinapatent-trademark.com.